The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., Panama / John Michaels, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 2019.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 28, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a tire manufacturing company with headquarters in Clermont-Ferrand, France. The Complainant also publishes travel guides, hotel and restaurant guides, maps, and road atlases.
The Complainant, who is present in more than 170 countries, has been using the MICHELIN trademark throughout the world for more than a century.
The Complainant owns numerous trademark registrations for MICHELIN including for example European Union trademark MICHELIN no. 4836359, registered on March 13, 2008, covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34, and 39.
In addition, the Complainant owns several domain names that reflect its trademarks, including , , and , just as a wholly owned subsidiary of the Complainant has published a ViaMichelin app.
The disputed domain names were both registered on June 5, 2018. At the time of this decision, the disputed domain names did not resolve to active webpages. 5. Parties’ Contentions A. Complainant
The Complainant’s assertions may be summarized as follows:
(i) Identical or confusingly similar
The Complainant states that the disputed domain names are confusingly similar to the Complainant’s MICHELIN trademark, since they contain the mark in its entirety with the addition of the generic term “via” as suffix, the country code index for France “fr”, and the generic term “maps” respectively as suffixes. The Complainant further claims that the disputed domain name is confusingly similar to the Complainant´s tradename “ViaMichelin”.
(ii) Rights or legitimate interests
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant thus states:
- that the Respondent is not affiliated with the Complainant nor has it been authorized to seek registration of any domain name incorporating the MICHELIN trademark;
- that the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names; and
- that the Respondent fails to show any intention of noncommercial or fair use of the disputed domain names since the disputed domain names are not being used actively.
(iii) Registration and use in bad faith
According to the Complainant, the disputed domain names were registered and are being used in bad faith. The Complainant is well-known throughout the world making it unlikely that the Respondent was unaware of the Complainant’s proprietary rights in the trademark, when the Respondent registered the disputed domain names.
The Complainant further argues that the passive use of the disputed domain names can satisfy the requirement of paragraph 4(a)(iii). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark MICHELIN because it contains the mark in its entirety with the addition of the dictionary term “via” as prefix and the geographical acronym “fr” as suffix. The generic Top-Level Domain (“gTLD”) “.live” does not dispel a finding of confusing similarity in the present case.
The Panel also finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark MICHELIN because it contains the mark in its entirety with the addition of the dictionary term “via” as prefix and the dictionary term “maps” as suffix. The gTLD “.live” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to both the disputed domain names. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings. Moreover, the Panel finds that the composition of the disputed domain names is such that it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, including the evidence on record of the use of the Complainant’s trademark MICHELIN, and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose domain names, which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The disputed domain names previously and presently do not resolve to active webpages nor do they seem to have been actively used in other ways. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
Noting that the disputed domain names incorporate the Complainant’s distinctive trademark MICHELIN together with the dictionary term “via” as prefixes, the geographical acronym “fr” and the dictionary term “maps” respectively as suffixes, and followed by the gTLD “.live”; that no Response has been filed; that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names; and, considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Date: September 11, 2019
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